International Data Group, Inc.

Trademark Trial and Appeal Board

Dec 21, 1998

No. 74613181 (T.T.A.B. Dec. 21, 1998)

Paper No.
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC. 21, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re International Data Group, Inc.
________
Serial Nos. 74/613,181 and 74/613,182
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Mark Harrison of Spencer & Frank for International Data
Group, Inc.
Hannah Fisher, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney).
_______
Before Cissel, Seeherman and Walters, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
This opinion presents our decisions with respect to
the appeals of the refusals to register in the two above-
referenced applications to register the mark “WEB
BUSINESS.” Both applications were filed on December 20,
1994, based on the applicant’s assertions that it possessed
a bona fide intention to use the mark in commerce. The
goods in the first application, S.N. 74/613,181, are as
Ser No. 74/613,181 and 74/613,182
2
follows: “prerecorded videos, audio cassettes, CD-ROMs, and
laser discs dealing with products and strategies on the
Internet.” The second application, as amended, identifies
the goods as “magazines, journals, brochures, pamphlets,
booklets and manuals dealing with products and strategies
on the world wide computer information network.”
Each application was refused registration under
Section 2(e)(1) of the Act on the ground that the mark
sought to be registered is merely descriptive of the goods
named in the respective application. In each application,
applicant subsequently disclaimed the word “WEB,” but
maintained that the mark as a whole is not merely
descriptive within the meaning of the Lanham Act.
Because the question to be resolved in each of these
two appeals is essentially the same, and the records in the
respective applications provide the same basis for our
resolution of these two cases, we issue this single opinion
explaining our rulings in both cases. There are minor
distinctions which can be made between these two
applications, but they do not alter our conclusion that
both refusals are proper.
The basic principles governing the resolution of the
issue of whether a mark is merely descriptive of particular
products is well settled. A term is merely descriptive
Ser No. 74/613,181 and 74/613,182
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within the meaning of Section 2(e)(1) of the Act if it
immediately and forthwith conveys an idea of a quality,
characteristic, function or feature of the goods with which
it is used. In re Bright-Crest Ltd., 204 USPQ 591 (TTAB
1979). A term is not merely descriptive of the goods if
imagination, speculation or perception is required for one
to reach a conclusion as to the nature of the goods based
on consideration of the mark and the goods. Manpower Inc.
v. Driving Force, Inc., 212 USPQ 961 (TTAB 1981). The
determination of descriptiveness must be made by viewing
the mark in relation to the goods set forth in the
application, considering the context in which the mark is,
or will be, used, and by evaluating the significance of the
mark to the average purchaser of the goods in question.
Roselux Chemical Co. Inc. v. Parsons Amonia Company, Inc.,
132 USPQ 627 (CCPA 1962); In re Chicago Pneumatic Tool
Company, 160 USPQ 628 (TTAB 1981); and In re Buty-Wave
Products, Inc., 198 USPQ 104 (TTAB 1978).
We hold that the term sought to be registered is
merely descriptive of the goods set forth in these two
applications, namely, “prerecorded videos, audio cassettes,
CD-Roms and laser discs dealing with electronic networks,”
and “magazines, journals, brochures, booklets and manuals
dealing with products and strategies on the world wide
Ser No. 74/613,181 and 74/613,182
4
computer information network.” The words “WEB BUSINESS”
immediately convey the fact that the subject matter of the
recordings and publications is conducting business on the
Web. The term identifies a characteristic or quality of
the goods and is therefore unregistrable under Section
2(e)(1) of the Lanham Act.
The evidence made of record by the Examining Attorney
supports this conclusion. The best examples are some of
the excerpts from the Nexis database of published
articles, which show that “Web business” is commonly used
in reference to businesses which operate on the Web,
serving users of the world-wide computer network. Typical
examples from the first application file are as follows:
‘…presentation solutions are essential to the business of
any ambitious web business…”; “…if you don’t understand
this economic reality, you can’t run a successful Web
business.”; “…the Web business is a lot like the PC
business…”; “…technology will allow companies to accelerate
the transformation of their Web sites to Web businesses…”;
“…when it comes to building a successful Web business,
creativity is better.”; “…in July 1994 formed his new Web
business, OnSale.”; “…an integrator helping a customer
launch a Web business.”; and “Providing NetGravity’s
Adserver technology to CyberCash merchants will help
Ser No. 74/613,181 and 74/613,182
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strengthen existing Web businesses and empower new
enterprises on the Web.” The following are excerpts from
the other application file: “Analysts said Microsoft, like
other Web businesses, is still deeply in the red with its
Internet efforts.”; “…travel-based Web businesses find that
consumers are beating a path to their digital door…”; “…a
visual Web management tool geared to help Webmasters and
Web business managers improve the quality of their Web
sites.”; “…whether its 160-employee collection of Web
businesses will make money…”; “Amazon.com also realized
that Web businesses must provide a service as well as sell
a product…”; “One start-up Web business even helps people
design their own high-performance skis.”; “…which profiles
women active in Web businesses…”; “…some Web businesses are
earning revenue by selling ads on their sites.”; “You don’t
need a lot of capital to start a Web business…”; “That
leaves plenty of room for you to start your new Web
business.”; “…believes her web business is bound to
increase…”; and “the president says web business executives
need to understand the uniqueness of their workforce.”
Applicant argues that there are several possible
interpretations of what the term “WEB BUSINESS” is likely
to have when an individual is presented with the mark.
While it is possible that there could be different
Ser No. 74/613,181 and 74/613,182
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interpretations or connotations in connection with
different goods, we must determine the issue of
descriptiveness in connection with the particular products
specified in these two applications. When “WEB BUSINESS”
is considered in connection with the recordings and
publications set forth in the applications, it would be
understood to refer to such products which are for and
about web businesses. In fact, none of the excerpts made
of record by the Examining Attorney is inconsistent with
this connotation.
We note that our decision is not affected by any of
the third-party registrations made of record by either
applicant or the Examining Attorney. None of these
registrations involves the goods in question in either of
these applications. While these registrations may evidence
less than consistent application of the disclaimer rules,
they are not determinative of the issues before us in these
appeals.
Applicant’s other argument that the term sought to be
registered is not merely descriptive of the goods specified
in the application is not persuasive either. Applicant
contends that although the individual words which make up
the combination sought to be registered have recognized
meanings, the composite, when considered in its entirety,
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is not merely descriptive of the goods specified in the
applications. In view of the evidence of record, however,
this argument borders on the disingenuous. The combined
term “WEB BUSINESS” plainly is commonly used to refer to
businesses which conduct their commercial activities using
the Internet. The combination of “WEB” and “BUSINESS” does
not create any double entendre or unusual, unexpected
meaning. The term is frequently used in print, and it
identifies both the target market for applicant’s goods,
web businesses, and the subject matter of applicant’s
publications and recordings, i.e., topics of interest to
web businesses.
For that reason, the refusals to register are affirmed
in both appeals.
R. F. Cissel
E. J. Seeherman
C. E. Walters
Administrative Trademark Judges,
Trademark Trial & Appeal Board
Ser No. 74/613,181 and 74/613,182
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